By Christopher P. Singer --
Back in September, the U.S. Government Accountability Office (GAO) published a report to the Ranking Member of the House Committee on Oversight and Government Reform detailing how current U.S. Patent and Trademark Office hiring efforts are likely insufficient to reduce the current application backlog. The report identifies that examiner attrition, particularly among examiners with less than five years of experience, along with the USPTO's outdated production goals are key factors that have exacerbated the application backlog. New examiners are relied on primarily for the initial examination of new applications, and the GAO found that 70 percent of the examiners that had left the USPTO from 2002-2006 had fewer than five years of experience. While Patent Office management believed that examiners leave the Office primarily for personal reasons (e.g., family reasons), 67 percent of the 1,100+ examiners surveyed believed that the unrealistic production goals were a primary reason for attrition. From this survey information, the GAO report's sole recommendation was that the "USPTO undertake a comprehensive evaluation of the assumptions that the agency uses to establish its production goals."
The Department of Commerce submitted comments to GAO (attached as Appendix III of the report above) that instead of focusing on efforts to re-evaluate current production goals (established in the 1970's) to curb examiner attrition, chose to leverage the conclusion that hiring efforts alone will not reduce the backlog in order to highlight the Office's "productivity" initiatives (i.e., the continuation and claims rule changes and the proposed changes to IDS and Markush claims practice). According to the Department's comments, once the effect of these productivity initiatives can be assessed, the PTO will then reconsider the assumptions it makes in establishing examiner production goals. Seemingly, this was simply a polite way of saying: "GAO, your recommendation has been considered, but determined to be unpersuasive."
There is little debate that these changes will shift much of the current examination burden from examiners to the applicant and prosecuting attorneys, which should allow for a more rapid examination. However, even with this reapportioned burden, a real and immediate effect on the backlog will likely only be realized if: (1) the examining corps is prepared to handle the new issues that arise under the new rules, and (2) if there are adequate numbers of examiners to do the work.
Interestingly, several comments published in response to a Patently-O post regarding 35 USC § 120 indicate that the USPTO has not adequately prepared the examining corps to deal with implementation of the new continuation and claims rule changes, which take effect November 1 (tick-tock, tick-tock) (see, e.g., comments from "Examiner X" and "another examiner"). How, then, can Patent Office management assert that it has done its part in preparing the examiners to deal with application processing under the terms of the new rules? As evidenced by the 100+ pages of commentary in the Federal Register notice attached to the publication of the new rules, the 67 pages of FAQs (which have been modified since their initial publication), and the huge amount of discussion from other sources, these new rules are very complex and difficult to interpret. Examiners who are not prepared to deal with the mechanics and consequences of these rule changes should probably expect to spend at least the same amount of time on any given application under the new rules as they do now. It seems that practitioners, applicants, and examiners will all be dealing with the fallout from these rules for the months to come.
So, by the end of the week (assuming GSK is unable to provide us all with a Halloween treat), applicants will be left to deal with a brave new world of patent prosecution under the new rules, and examiners will be expected to maintain the same production goals under a radically new system, with minimal training. Let the gnashing of teeth continue.
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